The CJEU has confirmed that earlier UK unregistered rights relied on in EU oppositions filed prior to Brexit are no longer a valid basis for opposition.

Background

In 2015, Mr Ye applied to register an EUTM for  covering goods and services in classes 3, 9, 14, 18, 25 and 35. Nowhere filed an opposition based on earlier UK unregistered trade marks, namely, , and . The EUIPO’s Opposition Division and Second Board of Appeal of EUIPO (“BoA”) dismissed the opposition and appeal in 2017 and 2018, respectively. Nowhere appealed to the General Court. However, before the General Court could decide on the matter, the BoA revoked its decision. 

In 2021, after the UK’s withdrawal from the EU and the end of the transition period, the BoA issued a decision dismissing the opposition on the basis that Nowhere could no longer rely on UK unregistered rights as a basis for opposition proceedings. Nowhere appealed to the General Court relying on a single plea, namely, that the only relevant date for assessing the existence of an earlier unregistered right was the date on which the trade mark application was filed, and not also the date of the decision (as argued by the EUIPO). The General Court agreed with Nowhere and annulled the BoA’s decision. The EUIPO appealed to the Court of Justice of the European Union (“CJEU”).

Validity of UK unregistered rights in EU opposition proceedings

The issue to be decided by the CJEU was whether under Article 8(4) of Regulation 207/2009 (the legislation prior to Regulation 2017/1001) there was a requirement for the earlier UK unregistered rights to be valid as at the date of the EUIPO’s decision. For context, Article 8(4) of Regulation 207/2009 reads (emphasis added):

“Upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Community legislation or the law of the Member State governing that sign:

On 5 February 2026, the CJEU held that, while the unregistered rights need to exist prior to the date of application or priority date, the ‘right to prohibit the use of a subsequent trade mark’ is drafted in the present tense and does not refer to any date on which it should be satisfied. The CJEU therefore concluded that, for an opposition to succeed based on unregistered rights, the prior rights have to be valid at the date of application or priority date and the date on which the EUIPO takes a decision. 

As the UK unregistered rights were no longer valid at the point of the EUIPO’s decision, the CJEU annulled the General Court’s decision and rejected the opposition.

Implications for brand owners

Since Brexit, the EUIPO has been issuing decisions based on the assumption that UK unregistered rights are no longer a valid ground of opposition under Article 8(4). As such, this decision signals a ‘business as usual’ stance for the EUIPO and is likely to have a limited impact on UK unregistered rights holders. 

That said, there may be a few cases suspended or on appeal where UK unregistered rights were either a part of or the entire opposition against an application. So, this decision will be a blow to those opponents. 

What this decision does is reaffirms the EUIPO’s principle that the prior rights need to be valid at the date of application or priority date and at the date the EUIPO takes its decision. Opponents relying on earlier non-UK rights under Article 8(4) therefore need to be alive to the fact that their rights also need to be valid as at the date of the EUIPO’s decision. This means that, when bringing an opposition, the brand owner needs to consider whether the earlier rights will still be valid and part of its commercial plans a few years later when the EUIPO take its decision.